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   Author  Topic: Disclosing of information  (Read 588 times)


Posts: 16
Disclosing of information
« on: Aug 10th, 2005, 7:22pm »
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   I had submitted a patent app. 16 mos. ago and am waiting for a response from the uspto.  I was wondering if I should include my patent app. with other information when looking for a company to license to or describe it the best I can without sending the patent app.  Also the response from one company was that they have a R&D dept. and are reluctant to sign a NDA incase they are working on the same or similar devices and it would put them in a legal situation if one was signed.  My device has some features that would require a CIP should the patent app. grant.  Any thoughts to this topic is appreciated.
IP Logged
Senior Member


Posts: 2584
Re: Disclosing of information
« Reply #1 on: Aug 10th, 2005, 9:12pm »
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I'm assuming it's not a provisional application.  If I'm wrong, then you no longer have a pending US patent application.
If you didn't request non-publication upon filing you application, it will be published in a few months anyway.  Then, you can just hand them a copy of your published patent application, or send them a link to where they can get a copy themselves.
Most NDAs allow the use or disclosure of confidential information under a number of circumstances, one of which is the publication of the information through no fault of the disclosee.  So, your NDA would have an effective term of just a few months.
If you requested non-publication and haven't sought protection outside the US and if secrecy is valuable to you, require an NDA before you give any specific details of your invention.  If a company won't sign an NDA, then you have to make a choice -- lose any trade secret protection or forgo doing business with them.
Of course, if your prospects for a patent look good, you can take the attitude of "you can pay me now or pay me later."  But then you risk being called names like a patent troll, patent extortionist, or patent terrorist when you come back with your issued patent and ask kindly for a reasonable royalty.
I hope that helps.
IP Logged

James D. Ivey
Law Offices of James D. Ivey
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